Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

The Northern District of Illinois and Chicago's Federal Bar Association chapter are hosting their Ninth Annual Awards for Excellence in Pro Bono and Public Interest Service awards program this Tuesday, May 13 beginning at 3:30 pm in the James Benton Parsons Memorial Courtroom (2525) of the Dirksen United States Courthouse at 219 South Dearborn Street. The program is open to everyone and is free of charge.

The keynote speaker will be William Neukom, the President of the ABA and partner in K&L Gates.  Prior to his private practice, Neukom was executive vice president of Law and Corporate Affairs for
Microsoft, where he managed Microsoft’s legal, government affairs and philanthropic
activities.

Seven “Awards for Excellence in Pro Bono and Public Interest Service” and one “Special
Recognition Award for Public Interest Service” will be presented to the following Chicago-area lawyers for their pro bono and public interest work before the Northern District:

• Sara C. Arroyo and Rosa M. Tumialán, of Dykema Gossett PLLC (presented by the Judge Coar);
  
• Anthony J. Masciopinto, of Kulwin, Masciopinto & Kulwin, LLP (presented by Judge Manning);
  
• Myron Mackoff, of Richardson & Mackoff (presented by the Chief Judge Holderman and Magistrate Judge Valdez);
  
• Joshua D. Lee and Amy M. Rubenstein, of Schiff Hardin LLP (presented by the
  Judge Brown);
  
• Catherine Caporusso and Margot Klein, of the Federal District Court's Self-Help Assistance Program (presented by Judge Hibbler);
  
• David A. Gordon, Michael B. Nadler, and Kristen R. Seeger, of Sidley Austin LLP (presented
  by Magistrate Judge Schenkier);
  
• Lisa R. Kane, of Lisa Kane & Associates, PC (presented by Chief Judge Holderman); and
  
• Richard J. Gonzales, Clinical Professor of Law, Chicago-Kent (presented by Chief Judge Holderman).

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The Northern District has posted the Seventh Circuit's new proposed pattern jury instructions for patent cases on its website -- click here for a copy.  The instructions include all of the recent revisions to the patent laws, including KSR and Seagate. The Seventh Circuit requested comments on the instructions be sent to:

Chief Judge Robert L. Miller, Jr.
robert_miller@innd.uscourts.gov
325 Robert A. Grant Federal Building
204 S. Main St.
South Bend, IN 46601

Comments will be accepted until April 1st.  Also, below is my list of IP jury instructions by Northern District judge, I am sure we will start to see some new ones soon in light of the turbulent 18 months patent law has had:

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Crafting proposed jury instructions is one of the first steps when preparing for trial.  And one of the first steps in drafting those instructions is looking for pattern or sample instructions that the court has previously used or endorsed.  In order to help speed that process, I am adding a new Blog feature.  I have gathered the jury instructions that each of the Northern District judges identify on their respective  web pages as either form or model instructions.  Most have general civil instructions and a few have specific sample instructions for various types of IP suits.

This list should save you time when you are looking for model instructions, but I would like to make it even more useful. If you have a set of instructions used in a Northern District IP case send them to me and I will add those instructions to the list (either anonymously or with credit to the sender, at the sender's discretion). 

So, send me your jury instructions -- chicagoiplitigation@yahoo.com -- and the name of the judge that presided over the trial.  As I receive new instructions, I will add them to this post.  If I get a large response, I will do additional posts on the instructions or create a separate page where you can access the files.

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Beck Sys., Inc. v. ManageSoft Corp., No. 05 C 2036, 2006 WL 2037356 (N.D. Ill. July 14, 2006) (Schenkier, Mag. J.).

In considering the scope of attorney-client privilege and work product waivers stemming from defendant ManageSoft’s reliance on an opinion of counsel, Magistrate Judge Schenkier undertook a detailed analysis of the Federal Circuit’s recent In re Echostar Communications, 448 F.3d 1294 (Fed. Cir. 2006), decision and how it changes the Northern District of Illinois’ previous ruling on the issue in Beneficial Franchise Co., Inc. v. Bank One N.A., 205 F.R.D. 212 (N.D. Ill. 2001).

In Echostar, the Federal Circuit held that reliance on an opinion waives attorney-client privilege with respect to all communications relating to the subject matter. This means that even if you use in-house counsel to provide the opinion, which Echostar did, privilege is waived for all communications with any counsel, including trial counsel, on the subject.  The Court considered the following three categories of work product, holding that the first and third categories are waived when relying on an opinion, but that the second is not waived: 1) documents embodying a communication between the attorney and client regarding the subject matter; 2) documents analyzing law, facts or strategy and reflecting the attorney’s impressions which were not given to the client; and 3) documents discussing an attorney-client communication concerning the subject matter which were not themselves sent to or from the client. The Federal Circuit also held that the waivers continue for communications after the litigation was filed. For a more detailed analysis of the Federal Circuit’s Echostar decision, visit Patently-O.

Magistrate Judge Schenkier noted that the Beneficial decision is largely in line with Echostar because Beneficial held that waiver continues after litigation is initiated and that waiver extends beyond opinion counsel to all communications with any counsel regarding the waived subject matter. But the Court found that Echostar modified the Beneficial analysis in one area – the scope of work product waiver. The two opinions agree that category one documents are waived, but differ slightly on the other two categories. Beneficial required protection of category two documents if they contradicted the disclosed opinions of counsel. But Echostar does not require waiver and production with respect to any category two document, narrowing the waiver as contemplated by Beneficial. Similarly, Beneficial only waived work product protection for category three documents if they contradicted the disclosed opinions of counsel. But Echostar holds that waiver applies to all category three documents, broadening the Beneficial waiver.

A final procedural point may be very important to litigators currently dealing with this issue, but which will shortly become moot. The Court, of course, ordered ManageSoft to review its documents and privilege log and to produce any documents in waived categories. The Court also, however, required that plaintiff return to ManageSoft any category two documents which ManageSoft might have originally produced under the Beneficial ruling, holding that such documents were inadvertently produced and did not constitute waiver.

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